Book review – The Practitioner’s Guide to the PCT

Second edition by Jay A Erstling, Megan M Miller. ABA Book Publishing, 16 May 2023. ISBN: 9781639052936; paperback –

Gwilym Roberts, Partner at Kilburn & Strode LLP in London.

The authors of this excellent guide modestly suggest that the PCT is not as complex as it looks, and in this guide running to over 300 pages they demonstrate that whether or not the PCT is a complex entity, it can indeed be demystified. Sitting at, currently, 157 countries, the PCT must be one of the most astonishing international endeavours of all time, and its growth since 1978 demonstrates its huge commercial and economic importance, building from just 650 filings in its first year to over a quarter of a million in last two or three years. This guide, therefore, is tremendously important.

Starting with a super clear review of the PCT system, including useful historical context and an exposition of the practical benefits, The Practitioner’s Guide to the PCT then takes the reader through the various stages of the process in awesome and essential detail. The first third of the book is dedicated to the filing process and through the liberal use of figures, tables, screenshots, hints and tips, holds the user’s hand through the whole process including technically specific areas such as sequence listings and biological deposits, not to mention a host of ‘wrinkles’ on national practices. And it genuinely acts as a guide – not only giving many examples, but even stretching to gentle recommendations which, with a system of this complexity, is incredibly helpful. The guide then moves through various details of the intermediate parts of the process – publication, recording changes, troubleshooting and the search and examination process before devoting another significant chunk to the national and regional stage, again not avoiding practical guidance on topics such as country selection strategy, tips for global drafting, the important issue of attorney selection and management, and a raft of other pragmatic advice. The guide is also very much up to date not only in its presentation, but also with handling of topics like third party observations, standard ST.26 and the introduction of the Unitary Patent at the EPO.

Both the authors bring huge experience and in wonderfully complimentary areas; Jay Erstling is known to anyone who’s ever wanted to learn about the PCT system, having worked at WIPO and advised and taught on PCT matters for more years than he may want to admit to! But the expertise of co-author Megan Miller is equally impactful and in particular Megan brings a unique perspective with not only lengthy practitioner experience but also a history as a paralegal. And as we all know, it’s the paralegals who really get the system…

Although published by the ABA, and although the authors have expressed awareness that there is a US centre to this book, it is of genuinely global relevance. The sections on national practice in major jurisdictions are lengthy and detailed and, based on this reviewer’s experience, extremely accurate at least in relation to EPO practice. But the level of detail and the wrinkles about practice in a whole range of national stage elements is astounding and incredibly useful. Anyone who wants to understand the PCT system from a procedural or strategic perspective needs to have a copy of this guide wherever in the world they are based, and we can only thank Jay, Megan and The American Bar Association for putting such effort into an essential resource.

The Practitioner’s Guide to the PCT

This review was first published in the July-August edition of the CIPA Journal.